On April 24, 2024, United States District Court Judge Paul G. Gardephe (S.D.N.Y.) construed claims of three patents asserted by Network-1 Technologies, Inc. against Google LLC and YouTube, LLC. The court found the asserted claims of two U.S. Patents, Nos. 8,010,988 (the “’988 Patent”) and 8,904,464 (the “’464 Patent”) invalid as indefinite and granted Google’s motion for summary judgment of non-infringement on the asserted claims of a third, U.S. Patent No. 8,205,237 (the “’237 Patent).
The asserted claims related to “identif[ication] [of] a [media] work without the need of inserting an identification code into a [media] work.” Op. at 2. Network-1 accused Google’s “‘Content ID’ system [used] in connection with YouTube,” to identify “‘whether videos uploaded by YouTube users contain a video, audio, or melody content’ that ‘belongs’ to another person—for example, a copyright holder” of infringing multiple method claims across the three asserted patents. Id. at 5. At claim construction, the parties disputed the construction of, among other things, the term “non-exhaustive search.” Id. at 18.
Network-1 argued that “non-exhaustive search” meant “[a] search designed to locate a [near] neighbor without comparing to all possible matches (i.e., all records in the reference data set), even if the search does not locate a [near] neighbor.” Id. at 18. Google asked the court to find the term indefinite. In analyzing the issue, the court found that neither the claims nor the specification “shed light on the meaning of” the term. Id. at 20, 21. The court noted that “the words ‘exhaustive’ and ‘non-exhaustive’ do not appear in the specification.” Id. at 21-22. Turning to extrinsic evidence, the court found that “[b]ecause [Network-1’s expert’s] declaration largely rehashes arguments made in Plaintiff’s briefing, it is of little value as extrinsic evidence” and was “undermined by his deposition testimony,” (id. at 24) and concluded the expert’s “opinion is entitled to little weight.” Id. at 25. Additional extrinsic materials were also found to be unhelpful, and the court found that “the extrinsic evidence does not support Plaintiff’s proposed construction.” Id. at 26.
Ultimately, the court explained that “there is an indefiniteness problem if the claim language ‘might mean several different things and no informed and confident choice is available among the contending definitions.’ Interval Licensing, 766 F.3d at 1371 (quoting Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 911 (2014)).” Id. at 26. As a result, it found that “the phrase ‘non-exhaustive search’ is indefinite, because ‘read in light of the specification and prosecution history, [it] ‘fail[s] to inform, with reasonable certainty, those skilled in the art about the scope of the invention.’” Id. at 28.
The court found that Google and YouTube were also entitled to summary judgment of non-infringement for the asserted claims of the ’237 Patent because the accused Content ID system did not perform a “sublinear search” as claimed by the ’237 Patent: “determining, by the computer system, an identification of the media work using the media work extracted features to perform a sublinear approximate nearest neighbor search of reference extracted features of reference identified media works.” Id. at 37.
The case is Network-1 Techs., Inc. v. Google LLC et al., No. 14-cv-2396 (S.D.N.Y. Apr. 24, 2024).
